How not to register your sound mark

This is a new case of an application for registration of a sound mark which gained notoriety in the media and, once again, was rejected due to lack of distinctiveness – sound marks are eligible for registration, but not all.

Although under different arguments, the General Court of the European Union upheld the decision of the European Union Intellectual Property Office (EUIPO), which dismissed the claim of the company Ardagh Metal Beverage Holdings GmbH & Co . KG.

This is not the first time that a beverage industry giant has filed for registration of a trademark based on the sound of opening a beverage can. In 2014, Anheuser-Busch InBev SA, owner of the Budweiser trademark, filed an application for registration of the sound trademark in this direction, which was rejected by the United States Patent and Trademark Office (USPTO), on the grounds that virtually all beer bottles and cans make the same sound when opened, regardless of the supplier. Consequently, the trade mark applicant cannot claim the exclusive use of a sound which is generic and which, therefore, does not satisfy the essential role of the mark which is to differentiate the origin of a good or ‘a service.

In the case under consideration, the German company Ardagh Metal Beverage Holdings GmbH & Co. KG has applied for registration of a trademark that recalls the sound produced when opening a can of beverage, followed by ‘a moment of silence for about a second and sparkling for about nine seconds. The application was filed in June 2018 and aimed to identify different drinks, as well as metal containers for transport and storage.

Right and wrong arguments of the European Union Intellectual Property Office and confirmation of the decision of the General Court of the European Union

After considering the absolute and relative reasons for the rejection of the mark, EUIPO rejected the European Union trade mark application no. 017912475 on the grounds of lack of distinctive character, the applicant having replied to the notice sent by the Office, which subsequently accepted its arguments and definitively rejected the registration of the sound mark for all the products. Among the arguments raised by the Office of the European Union was the fact that the sound in question is not sufficiently different from the sounds produced by opening a can or a bottle of any commercial origin.

Not being satisfied with EUIPO’s decision, the German company appealed to the EUIPO Boards of Appeal, arguing that the mark in question exhibited the element of surprise of the time interval between the sound of opening of the can and the sound of the sparkling drink, that the combination of these elements made the mark distinctive and different from the usual sound of opening of sparkling drinks, that the mark in question also applied to products of which the composition did not contain carbon dioxide, and the degree of consumer attention to such goods was high.

In the decision on appeal R 530 / 2019-2, the boards of appeal confirmed the decision as given and stressed that a distinctive mark must first be assessed with regard to the goods and / or services which ‘it is intended to identify and, on the other hand, in relation to the perception of the sign by the target audience as indicative of a commercial origin. In addition, it found that the criteria for the distinctive character of a mark should be the same regardless of the type of mark to be registered.

However, the Boards of Appeal of EUIPO have advanced the argument that a sound mark should deviate significantly from the norm or habits of the goods / services sector that it seeks to identify, so that it could be considered distinctive.

As indicated by the General Court of the European Union (CGE) in procedure T ‑ 668/19, brought by the German company against the decision of EUIPO, the argument put forward by EUIPO refers to trade marks three-dimensional, which are composed by the shape of the product itself or of its packaging when there is a standard or practices in the sector relating to this shape. Thus, in its decision, the EGC stressed that this precedent relating to three-dimensional marks could not apply to sound marks, since the latter consist of signs independent of the external appearance or of the shape of the goods that they identify.

Another erroneous conclusion of EUIPO, according to EGC’s interpretation, was that in the respective beverage and packaging markets it would be unusual to identify the commercial origin of a product solely by sounds, on the grounds that these products are silent until consumed. Thus, the sound mark in question would be of no use in guiding the consumer’s choice for that specific good.

The European Court pointed out that most goods are soundproof in themselves and only produce sound at the time of consumption. Thus, the mere fact that a sound can only be heard when a good is consumed does not mean that the use of sounds to identify the commercial origin of a good in a certain market is unusual.

“(…) the opening of a can or a bottle is intrinsic to a technical solution linked to the handling of drinks with a view to their consumption, this sound will therefore not be perceived as an indication of the commercial origin of these goods. “

Although it considered that some of the arguments put forward in the decision on the appeal served by EUIPO were erroneous, the General Court stressed that the reasoning of the Office was based on the important ground that, in the present case, the sound emitted when it is opened is considered to be a purely technical and functional element, the opening of a can or a bottle being intrinsic to a technical solution linked to the handling of drinks with a view to their consumption, this sound will therefore not be seen as an indication of the commercial origin of these goods. In addition, the two decision-making bodies stressed that the sound elements and the silence lasting about one second, considered as a whole, do not present any intrinsic characteristic allowing them to be perceived by the target audience as an indication of the commercial origin of the product – that is, these elements are not sufficiently characteristic to differentiate them from comparable sounds in the beverage industry.

Furthermore, the General Court found that the absence of reasoning from the Boards of Appeal of EUIPO on the lack of distinctive character of the mark in relation to products which may not contain carbon dioxide was not likely to affect involve the annulment of the decision rendered by EUIPO, insofar as it was overall sufficiently well founded, so that the applicant was able to understand the justifications for the measure taken in this regard and that the EGC judge also been able to exercise control over the legality of the said decision.

Consequently, notwithstanding a few equivocal reasons from the Boards of Appeal, the General Court considered that they had not had a decisive influence on the conclusions of the decision, the two bodies having agreed that there was no distinctive character of the sound mark in question.

Therefore, it is concluded that, like any mark, a sound mark must possess sufficient distinctive capacity to identify the goods and / or services that it is intended to identify and cannot, for example, describe the type, quality and other characteristics associated with these goods and / or services.

In this case, the sound mark was considered non-distinctive because of its descriptive character, but there are also other cases where a mark can be considered non-distinctive. On the other hand, sound marks can be considered as such by being made up of very simple musical pieces, with one or two notes, sounds in the public domain, sounds too long to be considered as an indication of commercial origin or by sounds generally associated with specific goods and services.

Among these grounds for rejection, there is the curious case of the sound mark “TUDUM” created by Netflix, which was the subject of an application for a sound mark in June 2018 and was refused by the Union Office. European Union for intellectual property due to lack of distinctive capacity. In that case, Netflix appealed the decision, but ultimately dropped the case and withdrew the sound mark application, largely due to the complexity of proving that the mark in question had acquired a distinctive capacity through its use – an interesting subject to explore in a future article!

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